Tuesday, 13 August 2013

Self-Represented Applicants at the UK IPO again

I have written before about self-represented applicants at the UK IPO, commenting that the IPO tend to much more accommodating with such applicants than with those represented by agents. I mentioned at the time that I was not sure this was necessarily a good thing, as we all have to follow the same rules regardless of who we are. Going the extra mile for applicants who have difficulty following the rules may be very admirable from a public service point of view, but in the end is it really worth it? This thought was prompted again by a recent decision from the IPO relating to a request for reinstatement under section 20A, BL O/305/13 (Roy Henry Booker).

Mr Booker filed his application, GB1014537.3, on 1 September 2010, claiming an invention relating to hazard warning lights being made separate from indicator lights so that both could be used. Mr Booker paid the application and search fees, and a search report issued in January 2011, citing several documents (this one, for example, pictured left), suggesting that the invention was not new. The search report also, rather unusually (and possibly a taster of things to come), indicated that exploitation of the invention would appear to be contrary to UK legislation, specifically Schedule 8 of the Road Vehicles Lighting Regulations 1989.

Mr Booker called the Office to query the search results, and was advised by the examiner that it might be best to abandon the application rather than requesting substantive examination. The application then proceeded along its normal course, publishing on 8 February 2012 as GB2482567A. As usual, the Office sent a letter reminding the applicant of the need to request examination, which was due by 8 August 2012. No request was filed, with the result that the Office sent a letter on 28 November 2012 informing the applicant that the application had lapsed. Nevertheless, Mr Booker continued calling the examiner who, after several calls, eventually gave in and sent a letter on 29 January 2013 with a fairly detailed assessment of the application, indicating that it basically had no hope of being granted and that Mr Booker should therefore give up (I paraphrase somewhat). Mr Booker nevertheless requested reinstatement, but not until 15 April 2013. The Office offered its preliminary view on 3 May 2013 that the case for reinstatement had not been met, giving Mr Booker the opportunity of a hearing.

The main issues the hearing officer had to deal with was whether the reinstatement request was made in time, and if it was whether the failure to comply with the examination request deadline was unintentional. Mr Booker's explanation was that he was wrongly advised by the examiner not to proceed, and he spent such a long time researching why his application was viable that he missed the deadline. The hearing officer accepted that Mr Booker had been confused by the letters from the Office, and considered that he only really became aware of what needed to be done when he telephoned the Office on 19 February 2013 and was told by a formalities officer what needed to be done and by when. The two month deadline under Rule 32(2)(a) was therefore considered to be met. As for whether the failure to comply was unintentional, the hearing officer accepted that Mr Booker did not file the examination request because he simply forgot to do so. The failure was therefore unintentional. As a result, the hearing officer accepted the request and ordered the application to be reinstated.

This case seems to me to illustrate why it is not necessarily a good thing for the IPO to be so accommodating with self-represented applicants. The examiner clearly thought he was trying to help by going way beyond what was actually required, but ended up creating more problems for himself and others in doing so. My opinion, for what it is worth, is that examiners should really stick to the task of searching and examining applications and not get too involved in trying to help out applicants.

5 comments:

While not strictly within the parameters of the job, the Search Examiner's mention of the Road Vehicles Lighting Regulations appears to be nothing more than a short observation on the potential exploitability of the invention, as the law stands. Given that Examiners are Civil Servants (having core values of integrity, honesty, objectivity, and impartiality, as per the current Civil Service Code) should we discourage those that attempt to add value in this way? Especially since the observation was clearly and appropriately caveated: "Although legality has no bearing on the patentability of an invention..."

I didn't think mentioning the regulation was the wrong thing to do, just unusual. The discussions about validity where no request for examination had been filed, however, seemed to cause more problems than they addressed. This was clearly where the examiner went too far, although the applicant was probably going to be a difficult one anyway.

The MPP para 1.36 addresses issues that can arise where an invention is contrary to UK law, and explicitly mentions that this fact is not necessarily a bar to patentability (manufacture could take place in the UK for export to countries where it is legal). In the days when CB radio was still illegal in the UK, the MPP used to mention CB radios as an example of a class of "illegal" inventions that could be patented.

1.36 Section 1(4) is a rider to section 1(3) to make it clear that an act or action prohibited by a law is not to be considered as necessarily the same thing as contrary to public policy or morality. (One reason for this is that a product which could not lawfully be used in the UK may be manufactured lawfully in the UK for export to countries where its use is not illegal). However the existence of a law or regulation may be a material fact to be taken into consideration in determining whether to refuse an application under s.1(3)....... etc

Off topic slightly but what do you have to say about "Park Assist" where the driver may or may not have to be in control or indeed "Driverless cars" ? How does this align with the current highway code or indeed UK driving law."Rule 123: You MUST NOT leave a parked vehicle unattended with the engine running or leave a vehicle engine running unnecessarily while that vehicle is stationary on a public road. Generally, if the vehicle is stationary and is likely to remain so for more than a couple of minutes, you should apply the parking brake and switch off the engine to reduce emissions and noise pollution. However it is permissible to leave the engine running if the vehicle is stationary in traffic or for diagnosing faults. Law CUR regs 98 & 107"http://www.highwaycode.info/general-rules-all-drivers-riders-103-to-158or Rule 160: Once moving you should"drive with both hands on the wheel where possible. This will help you to remain in full control of the vehicle at all times"Rule 149: "You MUST exercise proper control of your vehicle at all times"

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.